DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 06 May 2026, in response to the Office Correspondence dated 24 February 2026, are acknowledged.
The listing of Claims filed 06 May 2026, have been examined. Claims 1, 4, 6-13, 15 and 16 are pending. The applicant has amended claims 1, 6, 10-13, 15-16, canceled claims 3 and 5, states that claim 14 is “not entered”, and no new claims have been added.
Response to Amendment
Claim amendments have been entered. The applicant has designated claim 14 as “not entered”, which clarifies the prior objection regarding claim numbering that skipped number 14 without explanation in the claim listing itself. However, the applicant should formally cancel claim 14 in the claim listing, as the current designation of “not entered” is improper in a claim listing. Thus, the prior objection is withdrawn, however the issue remains open and a new objection has been made, as detailed below. The objection regarding duplication of acetamiprid in claim 12 is withdrawn due to amendment to the claim correcting this previously objected to redundancy.
Regarding the prior rejection of claims 1, 3, 4, 6-13, 15 and 16 under 35 U.S.C. §112(b), the applicant has amended the claims to correct the antecedent basis defect in claim 1, to clarify what is intended in claim 6, and to correct the Markush group phrasing. Accordingly, the rejections are withdrawn.
Regarding the prior written description rejection of claims 1, and 4-16 under 35 U.S.C. §112(a), the rejection is maintained. The Response to Arguments further details why the applicant’s arguments are not persuasive.
Regarding the rejection of claims 1, and 4-16 under 35 U.S.C. §103 over Di Modugno in view of Clark and claims 6-9, further in view of Klimov, the applicant's claim amendments and arguments have been fully considered but they are not persuasive, as detailed below in the Response to Arguments. Accordingly, the rejections under 35 U.S.C. §103 are maintained.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 24 February 2026, since the art which was previously cited continues to read on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 6-13, 15 and 16 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), for failure to comply with the written description requirement.
Claim 1 recites an application rate of depolymerized CMC of “from 0.11 to 0.87 kg/ha”. The specification at ¶[0018] discloses a range of from 0.01 to 3.0 kg/ha, preferably from 0.05 to 1.5 kg/ha. The Examples report specific application rates of 1.38 L/ha (Example 1), 1.42 L/ha (Example 2), and cumulative rates totaling 11.7 L/ha of MIX 1 (Example 3), which Applicant calculates in the Remarks as corresponding to 0.87 kg/ha of D-CMC. However, nowhere in the original specification is the specific sub-range 0.11 to 0.87 kg/ha expressly disclosed. While the specification discloses a broader range and discloses specific working examples at the upper end (0.87 kg/ha), there is no disclosure of the lower bound of 0.11 kg/ha. Moreover, the specification does not disclose any endpoint at 0.11 kg/ha, nor does it describe this range as a preferred or critical sub-range. This is a new matter rejection.
The written description requires that the applicant convey with reasonable clarity that the inventor was in possession of the claimed invention as of the filing date (see Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)). A mere broad disclosure does not constitute description of every sub-range therein (see In re Wertheim, 541 F.2d 257, 265 (CCPA 1976), wherein selection of a narrow range from a broader range may lack written description absent disclosure of the criticality of the selected range). Dependent claims 4, 6-13, 15 and 16 are included in this rejection because they do not cure the defect noted above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. § 102 and 103 (or as subject to pre-AlA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
Claims 1, 4, 6-13, 15 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Di Modugno et al. (US-9464227-B2; published 11 Oct 2016, hereinafter referred to as “Di Modugno”) in view of Clark et al. (AU-606890-B2; published 21 Feb 1991, hereinafter referred to as “Clark”).
Di Modugno teaches a method for moisturizing soils using formulations comprising a concentrated aqueous composition from 10 to 30% by weight of a depolymerized carboxymethyl cellulose (CMC) having a weight average molecular weight between 10,000 and 80,000 Da, 15 to 50% by weight of compatibilizer chosen among glycerol (a polyol) and sodium xylene sulfonate and from 0.5 to 20% by weight of at least a surfactant (significantly overlapping with the instant claim 6 ranges and significantly overlapping with or encompassing the instant claim 7 ranges), and preparing a liquid aqueous ready-to-use formulation comprising from 0.1 to 3.5% by weight of the concentrated aqueous composition, and applying on soil (column 3, lines 41-55).
Examples 2-4, 7 and 8 teach the use of 13.2% w/w CMC, compatibilizer selected from 38% w/w glycerol or propylene glycol or 15.2% w/w sodium xylene sulfonate and 0.6% w/w coco-alkyl polyglucoside citrate (APG-Citrate, commercialized by Lamberti SpA as Eucarol AGE EC) or 1.4% w/w sodium dioctyl sulfosuccinate (Table 3), encompassed within the instant claim 6 and 7 ranges (see In re Petering, 301 F.2d 676, 682 (CCPA 1962) and Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006), wherein a single enabling example species within the claimed genus range anticipates the genus if that species falls squarely within the claim).
In addition, evidentiary reference Klimov et al. (WO-2015124330-A1; published 27 Aug 2015), further teaches aqueous agrochemical formulations comprising cellulose ethers at concentrations overlapping the claimed ranges, having broader surfactant and compatibilizer ranges, including polyols and glycerol derivatives for stable concentrate formulations suitable for dilution and soil or seed application, wherein the cellulose ether may contain 3 to 30 wt%...” (page 3, line 35), which encompasses the lower instant claimed range. Klimov futher teaches, pre-mixed formulation seed treatments “where the auxiliaries can be a surfactant in an amount of 0 to 50 percent” and said “compatibilizer” as a polyol glycerol ester is also considered a surfactant, as “Suitable surfactants are surface-active compounds, such as anionic, cationic, nonionic and amphoteric surfactants, block polymers, polyelectrolytes, and mixtures thereof. Such surfactants can be used as emusifier, dispersant, solubilizer, wetter, penetration enhancer, protective colloid, or adjuvant. Examples of surfactants are listed in McCutcheon's, Vol.1 : Emulsifiers & Detergents, McCutcheon's Directories, Glen Rock, USA, 2008 (International Ed. or North American Ed.)…. Examples of esters are fatty acid esters, glycerol esters or monoglycerides…” (page 6, line 16-22 and 41). Thus, the instant claimed ranges (CMC 4-25 wt%, compatibilizer 10-45 wt%, surfactant 0.2-10 wt%) are fully encompassed by or directly adjacent to the ranges taught by Klimov and Di Modugno.
The anionic, cationic, non-ionic and ampholytic surfactants and mixtures thereof can be used as the surfactant, preferably anionic surfactants (column 4, lines 53-55; see also claim 9) and preferred nonionic surfactants are polyethoxylated alcohols (column 5, lines 15-16). Wherein the depolymerized carboxymethyl cellulose is a potassium salt (claim 6), subranges of depolymerized carboxymethyl cellulose having an average molecular weight of from about 15,000 to about 50,000 Da (claim 5), and concentration subranges of depolymerized carboxymethyl cellulose from about 12 to about 25 wt % (claim 2), compatibilizer from about 25 to about 45 wt. % (claim 3), and surfactant from about 0.5 to about 10 wt. % (claim 4) are taught.
Di Modugno teaches, “The disclosed aqueous solutions of the invention can be applied by, e.g., spraying between 60 to 500 l/ha, preferably 150 to 300 l/ha, or by sprinkling or dripping between 0.4 and 120 l/hour per emitter.” (column 6, lines 23-26) and a CMC concentration in the ready-to-use formulation 0.01-1.05 wt% (calculated as 0.1-3.5% of 10-30% concentrated CMC from column 3, lines 41-55). At a density of approximately 1 kg/L, these teachings inherently yield a calculable CMC application rate range of 0.006 to 15 kg/ha. However, Di Modugno does not explicitly teach the specific sub-range of 0.11 to 0.87 kg/ha of depolymerized CMC.
Clark teaches the use of agrochemical compositions for treating plants containing active ingredients “from 0.01 to 10 kg/ha, preferably 0.01 to 4kg/ha” (page 11, column 6, lines 29-30). Clark thus teaches that 0.01-10 kg/ha is a conventional, effective field application rate for agrochemical active ingredients. One of ordinary skill in the art, seeking to apply Di Modugno's depolymerized CMC composition as a carrier or adjuvant for agrochemical actives, would be motivated to apply the depolymerized CMC at the at the same conventional rates taught by Clark. The claimed sub-range of 0.11-0.87 kg/ha falls entirely within Clark's disclosed range and selecting an application rate within a known workable range to optimize known performance characteristics constitutes routine optimization (see MPEP § 2144.05, wherein optimization of known variables is prima facie obvious).
Di Modugno teaches compositions, “may also contain agrochemical active ingredients such as insecticides, herbicides, stabilizers, adjuvants, pH adjusters, anti-foam agents, plant nutrients including fertilizers and heavy metals, and the like. Preferred agrochemical active ingredients are plant nutrients.” (column 6, lines 1-6), thus teaching the limitation of instant claim 10.
Di Modugno does not explicitly teach the instant claimed systemic plant growth regulators (instant claim 11), systemic insecticides (instant claim 12), systemic fungicides or systemic bactericides (instant claim 13), systemic nematicides (instant claim 15) or microbial inoculants (instant claim 16).
The newly added claims 11-16 merely specify known categories or lists of conventional systemic actives, all of which were notoriously well known in the art for soil or root-zone application prior to the effective filing date.
Systemic plant growth regulators (auxins, cytokinins, gibberellins, etc.) are well-known and commercially available prior to the effective filing date- see also evidentiary reference Paternoster et al. (WO-2007146055-A2; published 21 Dec 2007) which establishes gelatinous plant soil moisturizing substrates consisting of at least one plant growth additive selected from the group consisting of plant growth hormones and plant growth regulators (claim 1), selected from a group consisting of gibberellins and auxins (claim 5).
Evidentiary reference Klimov et al. (WO-2015124330-A1; published 27 Aug 2015) teaches systemic insecticides are all well-known systemic active substances including carbamates, organophosphates, neonicotinoids, avermectins, milbemycins, fipronil the canonical phenylpyrazole, spinosins [spinosyns], imidacloprid, clothianidin, thiamethoxam, acetamiprid neonicotinoids, avermectins bamectin, emamectin, ivermectin, doramectin, eprinomectin, and milbemycins milbemectin, lepimectin, moxidectin, selamectin are milbemycins, systemic fungicides are all well-known systemic active substances including benzimidazoles, triazoles, phosphonates and phosphorothiolates organophosphate fungicides, antibiotics, pyrimidines, triazoles and piperazines, systemic nematicides are all well-known systemic active substances including carbamates, organophosphates, and avermectins as antibiotic nematicides (page 3 line 15-page 4, line 11).
Di Modugno teaches compositions that may contain plant nutrients including fertilizers (column 6, lines 1-6). It was well-known in the art prior to the effective filing date that microbial inoculants (e.g., Rhizobium, Bacillus subtilis) function as biofertilizers and biopesticides and are applied to soil as an alternative to or in conjunction with chemical fertilizers. Such microorganisms are recognized by the US EPA, FAO, and OECD as biofertilizers or biopesticides and are routinely applied to soil to enhance nutrient availability or suppress pests. It would have been obvious to substitute a known microbial biofertilizer for the conventional plant nutrient or fertilizer taught by Di Modugno to achieve the known benefits of biological nitrogen fixation or pathogen suppression, while simultaneously obtaining the soil moisture retention benefits of the depolymerized CMC formulation.
The evidentiary references provide explicit documentary evidence that these classes were conventional and commercially available. Because Di Modugno teaches the combination of depolymerized CMC with any agrochemical active, and the specific actives recited in claims 10-15 are merely exemplary of conventional, well-known systemic actives, it would have been obvious to substitute or select any of these known actives for the agrochemical active ingredient broadly taught by Di Modugno (see In re Boesch, 617 F.2d 272, 276 (CCPA 1980), wherein substitution of one known equivalent for another is obvious and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), wherein obvious to try when there are a finite number of identified, predictable solutions).
It would have been obvious to one of ordinary skill in the art to substitute a well-known microbial inoculant for the plant nutrient or agrochemical active broadly taught by Di Modugno, particularly where the goal is to improve soil conditions and plant health, the identical goal of Di Modugno’s moisturizing method. The addition of a microbial inoculant to a soil-moisturizing composition is no more than the combination of two known soil-treatment agents, each performing its known function, with no unexpected synergy demonstrated (see MPEP § 2144.04, wherein combining prior art elements according to known methods yields prima facie obviousness).
Substituting one known systemic insecticide, fungicide, nematicide, growth regulator, or microbial inoculant for another in Di Modugno’s compositions represents predictable use of prior art elements according to their established functions, consistent with KSR Int’l Co. v. Teleflex Inc. The applicant has not demonstrated that any specific active listed in claims 10-16 exhibits a non-obvious interaction with depolymerized CMC beyond the known moisture-retention and delivery benefits already taught by Di Modugno.
New Claim Objection
The following new objections is made from the previous Office Correspondence dated 24 February 2026, as the applicant's amendment necessitated the new grounds of objection presented below.
Claim 14 is objected to because of the following informalities:
Claim 14 is designated as “not entered”, which is an improper claim listing. The applicant should formally cancel claim 14 in the claim listing.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 06 May 2026, have been fully considered.
Regarding the prior written description rejection of claims 1, and 4-16 under 35 U.S.C. §112(a), the applicant argues that the claimed application rate of depolymerized CMC of "from 0.11 to 0.87 kg/ha" finds adequate written description support because the specification discloses broader ranges of 0.01-3.0 kg/ha and preferably 0.05-1.5 kg/ha, relying upon Ex parte Moraes Barros and In re Wertheim. This argument is not persuasive.
While the applicant correctly notes that disclosure of a broader range can, under appropriate circumstances, provide written description support for a later-claimed subrange, neither In re Wertheim nor Ex parte Moraes Barros establishes a per se rule that every conceivable subrange nested within a disclosed range automatically satisfies the written description requirement. Rather, the controlling inquiry remains whether the originally-filed disclosure reasonably conveys to persons of ordinary skill in the art that the inventor had possession of the later-claimed subrange as of the filing date (see Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)).
The instant specification discloses a broad range of 0.01-3.0 kg/ha, a preferred range of 0.05-1.5 kg/ha, and several working examples corresponding approximately to the upper endpoint now claimed. However, the originally-filed specification contains no disclosure identifying 0.11 kg/ha as an endpoint, any subrange bounded by 0.11 kg/ha and 0.87 kg/ha, any criticality associated with 0.11 kg/ha, and any indication that 0.11 kg/ha represents a threshold for obtaining the alleged biological effect.
In In re Wertheim, the court allowed a narrower sub-range because the broader range (25% to 60%) was fully disclosed, and the specific endpoints of the newly amended range (35% and 50%) were explicitly disclosed as exact points elsewhere in the specification as concrete specific embodiments at 36% and 50%. Unlike Wertheim, where the newly claimed range was derivable from specifically disclosed endpoints and examples, the originally-filed instant application does not state or otherwise identify these specific values as particular closed range points that form the boundaries of the invention, or specifically detail these values in concreate embodiments or examples to establish that the inventor had possession of this exact range. The specific numbers 0.11 and 0.87 are never mentioned nor a cellulose application rate of 0.11-0.87 kg/ha as a preferred embodiment or isolated in the examples, thus there are no “blaze marks” guiding a person of ordinary skill in the art to this specific sub-component range (see In re Ruschig (379 F.2d 990, 154 USPQ 118 (1967), wherein establishes that an application must provide clear signs or markers that single out a specific path through a forest of options ("blaze marks")). Rather, selection of these values appears to be a retroactive attempt to redraw claim boundaries.
Absent proof of extreme predictability, the narrower subrange is not supported from the broader disclosed range because the subrange endpoints are not found in the original text/examples (i.e., the exact numbers 0.11 and 0.87 do not exist in the original application). The application does not prove the inventor possessed that specific sub-range. The applicant's lower endpoint of 0.11 kg/ha appears to have been selected from an infinite number of possible values lying within the broader disclosed range. The written description requirement is not satisfied merely because a claimed value mathematically falls somewhere within a previously disclosed range (see Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)). Thus, the claim contains new matter.
A person of ordinary skill in the art, in reading the originally-filed application, has no way of knowing why 0.11 kg/ha and 0.87 kg/ha are significant. Arbitrarily selecting numbers to create a new subrange, wherein those specific endpoints were never disclosed as critical, significant, or exemplified in the originally-filed disclosure does not show that the inventor actually possessed the invention as now claimed.
In Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A., 20-2073 (Fed. Cir. 2021) the specification disclosed a broader range (40-80 wt%) and a preferred range. The patentee later tried to claim a specific closed sub-range (48.3-66.2 wt%) that wasn't explicitly stated but could be found within the broader range. The court rejected this, stating that a person of ordinary skill in the art must be able to see "immediate feasibility" and clear structural markers for those exact endpoints. An applicant cannot simply slice out a random section of a disclosed range and declare it a new invention.
Thus, Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A. dictates that an applicant cannot later claim arbitrary endpoints to create a new range if those specific endpoints were never disclosed. The original filing must clearly indicate that the applicant possessed the specific numerical boundaries of the claimed invention to satisfy the written description requirement and not be considered new matter. Accordingly, the rejection of claims 1, 4, 6-13, 15 and 16 under 35 U.S.C. § 112(a) is maintained, as the range constitutes new matter.
Regarding the rejections under 35 U.S.C. § 103, the applicant argues that Klimov discloses cellulose ethers rather than carboxymethyl cellulose and therefore does not support the obviousness rejection. This argument is not persuasive.
Klimov was not cited as teaching depolymerized carboxymethyl cellulose itself. Rather, Klimov was cited as evidence of conventional formulation practices in aqueous agrochemical concentrates employing cellulose-based rheology modifiers, surfactants, compatibilizers, polyols, emulsifiers, and agrochemical actives. The rejection relies upon Di Modugno for the depolymerized CMC component and relies upon Klimov only for overlapping concentration ranges and conventional formulation teachings. The obviousness rationale therefore does not require structural equivalence between Klimov's cellulose ethers and Di Modugno's depolymerized CMC. The applicant's argument attacks Klimov individually rather than the combined teachings of the references. Such arguments are not persuasive where the rejection relies upon a combination of references (see MPEP § 2145 and In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)).
The applicant argues that Di Modugno seeks to improve soil moisture retention whereas Clark is directed to herbicidal control of undesirable vegetation. This argument is not persuasive. The rejection does not rely upon Clark for its herbicidal activity. Clark is cited for its express disclosure of conventional field application rates for agrochemical compositions 0.01-10 kg/ha, preferably 0.01-4 kg/ha. The cited disclosure is independent of the specific biological activity of Clark's active ingredient and this teaching is not limited to diphenyl ether derivatives; it reflects general agronomic practice for effective soil treatment. One of ordinary skill understands that application rates within this range are conventional for soil-applied agrochemical formulations, regardless of the specific active ingredient.
A reference may properly be relied upon for all that it reasonably teaches one of ordinary skill in the art, including teachings unrelated to its primary purpose (see MPEP § 2123 and In re Heck, 699 F.2d 1331-1333 (Fed. Cir. 1983)). Accordingly, the fact that Clark's active ingredient is herbicidal does not negate its teaching regarding conventional agronomic application rates.
In addition, Di Modugno expressly discloses spray volume of 60-500 L/ha (col. 6, lines 23-26), CMC concentration in ready-to-use formulation of 0.01–3.0 wt% (claim 12), and density of ~1 kg/L (standard assumption for dilute aqueous solutions). Simple calculation yields a CMC application rate range of 0.006 kg/ha to 15 kg/ha. The claimed range of 0.11-0.87 kg/ha falls squarely within this inherently disclosed range. Selecting an application rate within a known workable range to optimize known performance characteristics is routine optimization, not patentable invention.
The applicant argues that Di Modugno (soil moisturization) and Clark (herbicide) are directed to different problems. However, the relevant inquiry is whether there is a motivation to combine the references to achieve the claimed invention. Di Modugno expressly teaches that its compositions may also contain agrochemical active ingredients such as insecticides, herbicides, [and] stabilizers” (col. 6, lines 1-6). Having chosen to include an agrochemical active (including potentially a herbicide), one of ordinary skill would naturally look to conventional agronomic references such as Clark for guidance on appropriate field application rates. This is a predictable combination of prior art elements, not an impermissible hindsight reconstruction.
The applicant argues that Klimov is directed to seed treatment, not soil application, and does not teach the specific ranges of claim 6, therefore, one of ordinary skill would not combine Klimov with Di Modugno. This argument is not persuasive. Klimov is cited only for its compositional ranges, not its field of use. Klimov teaches aqueous cellulose ether formulations comprising cellulose ether at 3-30 wt% (page 3, line 35), surfactant at 0-50 wt% (page 6, lines 16-22), and compatibilizer/polyol esters at expressly taught as suitable surfactants (page 6, lines 41). The field of use (seed treatment vs. soil application) does not negate the relevance of compositional teachings. One of ordinary skill formulating an aqueous concentrate for soil application would find Klimov’s overlapping ranges to be directly relevant guidance.
Moreover, Di Modugno itself teaches overlapping ranges of CMC in the concentrate at 10-30 wt% (col. 3, lines 41-55), compatibilizer at 15-50 wt%, and surfactant at 0.5-20 wt%. The claimed ranges (CMC 4-25 wt%, compatibilizer 10-45 wt%, surfactant 0.2-10 wt%) are either fully encompassed by or directly adjacent to both Di Modugno’s and Klimov’s teachings. Selecting concentrations within these known workable ranges for stability, pourability, or dilution properties is routine optimization. The applicant has provided no evidence that the claimed sub-ranges produce unexpected properties (e.g., improved stability, dilution characteristics, or efficacy) compared to the broader ranges taught by Di Modugno.
The applicant argues that Di Modugno does not explicitly teach systemic plant growth regulators, systemic insecticides, systemic fungicides/bactericides, systemic nematicides, or microbial inoculants as recited in instant claims 10-16. The examiner’s reliance on evidentiary references (Paternoster, Klimov) to establish that these classes are “well-known” is improper. The applicant’s argument is not persuasive.
Di Modugno broadly teaches agrochemical active ingredients. Di Modugno expressly states: “The disclosed compositions may also contain agrochemical active ingredients such as insecticides, herbicides, stabilizers, adjuvants, pH adjusters, anti-foam agents, plant nutrients including fertilizers and heavy metals, and the like.” (col. 6, lines 1-6). This teaching is not limited to the specifically enumerated examples, rather it is an open-ended disclosure that would reasonably encompass any conventional agrochemical active. The specific actives recited in claims 10-16 were notorious prior art. At the time of the instant effective filing date, systemic plant growth regulators (auxins, cytokinins, gibberellins), systemic insecticides (neonicotinoids, avermectins, organophosphates), systemic fungicides (triazoles, benzimidazoles), systemic nematicides (carbamates, organophosphates), and microbial inoculants (Rhizobium, Bacillus subtilis, mycorrhizal fungi) were all well-known and commercially available for soil or root-zone application. The examiner cited evidentiary references Paternoster and Klimov, not as primary references, but as evidence of the state of the art to show that these classes were conventional (see MPEP § 2144.03).
Substitution of one known active for another is prima facie obvious. It would have been obvious to substitute a known systemic insecticide, fungicide, nematicide, growth regulator, or microbial inoculant for the generic “agrochemical active ingredient” taught by Di Modugno, because each performs its known function in a predictable manner (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Di Modugno specifically teaches that preferred agrochemical active ingredients are “plant nutrients including fertilizers” (col. 6, lines 5-6). Microbial inoculants (e.g., Rhizobium, Azospirillum, mycorrhizal fungi) are recognized biofertilizers that perform the same function of enhancing plant nutrition. Substituting a known biofertilizer for a chemical fertilizer is a predictable substitution within the same art. The applicant has not submitted any evidence demonstrating that the claimed systemic actives or microbial inoculants interact with depolymerized CMC in an unexpected manner beyond the known moisture-retention and delivery benefits already taught by Di Modugno. Absent such evidence, the substitution is prima facie obvious.
The applicant argues that Clark teaches killing plants and therefore would not suggest increasing plant vigor. This argument is not persuasive. Claim 1 recites, "...such that the plant has increased plant vigor for at least a period of three weeks from application." The prior art combination teaches application of depolymerized CMC-containing compositions to soil in conjunction with agrochemical actives. Improved plant vigor constitutes an intended result or outcome of the claimed method. Where the prior art teaches the identical or substantially identical process, discovery of a previously unappreciated property or result does not render the process patentable. The burden therefore shifts to the applicant to demonstrate that the claimed process differs structurally or operationally from the prior art process and that the alleged result is attributable to that difference. The applicant has not done so.
The applicant’s “unexpected results” argument is procedurally and substantively deficient. The applicant has not submitted an affidavit or declaration under 37 CFR § 1.132 attesting to unexpected results. Arguments by counsel cannot substitute for factual evidence (see In re De Blauwe, 736 F.2d 699 (Fed. Cir. 1984)). Even if considered as argument, the applicant has failed to demonstrate that the claimed sub-range is critical.
The applicant relies upon Examples 1-3 to demonstrate allegedly unexpected synergistic effects. This argument is not persuasive. To establish unexpected results sufficient to rebut a prima facie case of obviousness, the applicant must demonstrate a difference in kind rather than degree, that the results are unexpected relative to the closest prior art, and that the evidence is commensurate in scope with the claims (see MPEP § 716.02 (a)-(d), In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), and In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). The evidence does not satisfy these requirements.
The claims now require 0.11-0.87 kg/ha depolymerized CMC. The examples do not compare below 0.11 kg/ha, within the claimed range, and above 0.87 kg/ha. Consequently, the evidence fails to establish that the claimed range itself is critical. Without such a comparison, the alleged synergy cannot be attributed to the specific numerical range. Applicant’s data merely show that some amount of CMC (in these examples, at or near 0.87 kg/ha) improves efficacy. This is exactly what Di Modugno teaches, that CMC improves moisture retention and agrochemical delivery. There is no showing that 0.11–0.87 kg/ha is unexpectedly superior to 0.05–0.10 kg/ha or 0.88–1.5 kg/ha.
Claim 1 encompasses every systemic insecticide recited in claim 12, every systemic fungicide recited in claim 13,every systemic bactericide recited in claim 13, every systemic nematicide recited in claim 15, every plant growth regulator recited in claim 11, and every microbial inoculant recited in claim 16. Yet the specification presents only azoxystrobin, fluensulfone, and one microbial inoculant. The evidence therefore is not commensurate with the breadth of the claims.
Di Modugno expressly teaches that depolymerized CMC improves water retention, improves soil conditioning, and improves retention of applied materials within the rhizosphere. The alleged improvements reported by applicant are entirely consistent with the expected consequences of these known properties. The data therefore reflects an expected degree of improvement resulting from improved retention and delivery rather than a new or unexpected mechanism. Accordingly, the evidence does not outweigh the established prima facie case of obviousness.
The applicant points to Table 3 showing effects at 37 days and contrasts with Di Modugno Table 5 (effects waning by 48 hours) as evidence for a long-lasting effect. This comparison is inapposite. Di Modugno’s Table 5 measures soil volumetric water content, not plant vigor. Plant vigor is an indirect, cumulative result of many factors, including moisture retention over time. The fact that moisture retention effects wane by 48 hours does not preclude longer-term plant vigor benefits. Moreover, Di Modugno teaches that CMC is a soil moisturizer intended for repeated application; the specification itself reports cumulative application totaling 11.7 L/ha (Example 3). The alleged long-lasting effect is not unexpected.
Further, regarding amended claim 6 and its dependent claims 7-9, Di Modugno teaches an aqueous concentrate composition comprising depolymerized CMC at 10-30 wt% (col. 3, lines 41-55), compatibilizer at 15-50 wt% (selected from glycerol, propylene glycol, sodium xylene sulfonate), and surfactant at 0.5-20 wt% (e.g., APG-citrate, sodium dioctyl sulfosuccinate). The claimed ranges (CMC 4-25 wt%, compatibilizer 10-45 wt%, and surfactant 0.2-10 wt%) overlap substantially with Di Modugno’s ranges. Where ranges overlap, the claimed invention is prima facie obvious absent a showing of unexpected results. Di Modugno’s Example 2 (13.2% CMC, 38% glycerol, 0.6% APG-citrate) falls squarely within the claimed ranges of claim 6.
Klimov provides additional support by teaching broader ranges (cellulose ether 3-30 wt%, surfactant 0-50 wt%, polyol esters as compatibilizers), confirming that variations within these ranges are conventional. The applicant has provided no evidence that the claimed sub-ranges produce unexpected properties (e.g., improved concentrate stability, pourability, or dilution characteristics) compared to the ranges expressly taught by Di Modugno. Thus, claims 6-9 are rejected under 35 U.S.C. § 103 as obvious over Di Modugno alone or in view of Klimov.
Finally, the applicant’s statement that “arguments are made without prejudice or disclaimer” is noted, but does not alter the legal effect of any amendment or argument.
Conclusion
No claims are allowed.
The applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (87 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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